Why Semantic Searching Fails For Freedom-to-Operate (FTO) and What You Should Be Doing Instead (PART 1)

Part 1 of 3: Introduction to the differences between Patentability and FTO searching

This three-part series explains why conventional techniques, particularly “semantics-based” searching, fall short for freedom-to-operate (FTO) searching and analysis. It then puts forth a solution for avoiding these problems. Part I is an introduction to the differences between the searches. Part II will identify the deficiencies of semantic searching in relation to FTO analysis. Part III will explain how these deficiencies can be overcome. Click here to download a PDF of the entire series.

Not all patent searches are the same.

This seems an obvious point. But how well understood are the conceptual distinctions between the various types of patent searches? We are quite familiar with a “patentability search,” which attempts to answer the question:

Is this concept novel and non-obvious?

We are also familiar with an “invalidity search,” which attempts to answer the question:

Should this patented invention have been considered novel and non-obvious?

These types of searches are conceptually similar, and may be collectively referred to as “patentability searches.” Now consider, in contrast, the question posed in an FTO search:

Is this product likely to infringe an active patent?

Based on these different underlying questions, three critical distinctions between FTO and patentability emerge.

1. In FTO, relevance of patent results is determined by claim scope, not description.

Patents necessarily include a technical description and legal claims. While the technical description must enable the claimed inventions, the actual scope of what is claimed may vary significantly from what is described in the technical description. For example, practitioners generally aim for detailed technical descriptions yet broad all-encompassing claims.

In the vast majority of FTO cases, the claims of patents that describe features of a product undergoing FTO do not actually cover those features. Usually these claims are significantly narrower in scope. Other times, the subject matter of the claims is simply directed to other disclosed aspects.

The reverse scenario is also a significant concern. Patents that do not describe features of a product undergoing FTO could certainly have claims that cover one or more of its features. For example, consider a cup having a handle. A patent may never describe a handle, but may claim a cup with circumferentially asymmetric mass distribution. A handle could likely fall within those bounds. These scenarios are quite common.

2. Products tell a thousand stories.

Questions of patentability are often limited to a concept or a fixed set of concepts. The question hinges on a specific claim that is, by definition, a single textual sentence. On the other hand, FTO analysis centers on actual products. A product, by its physical presence, could be described in thousands of ways. For example, even a simple device implicates all of its structural components, its mass characteristics, its geometric characteristics, processes underlying its manufacture, and processes involving its use.

Anticipating all the ways in which a product can be described is serious guesswork. Opting to focusing on some ways and not others is an arbitrary exercise.

3. Missing patents in an FTO search could be dire.

A final distinction between these types of searches lies in the consequences of missing key patent references. Missing key patent references in a patentability search is certainly not desirable. However, I would venture a guess that, if they were forced to choose, most companies would prefer to have a potentially invalid patent issue than a potentially infringing product launch.

Also, finding some relevant patents in a patentability search is helpful. In fact, perhaps, in an invalidity investigation, a few good references is all it takes; no need to lose sleep over the prospect of other patents lurking about. In other words, there are pro rata rewards to locating relevant patents in patentability searches; the more relevant patents we find, the better we understand the landscape of a feature.

Not true for an FTO search. Finding relevant patents “along the way” does not bring an analyst any closer to the finish line or provide any greater satisfaction that their work is complete. Finding some patents of concern is little indication of whether other patents exist that may also be of concern. That one missed patent could spell complete disaster for a product line or, worst case, a business.

These observations may not be news to experienced patent analysts, who have long understood the unique difficulties associated with FTO patent searching and analysis. What is notable, however, is that conventional analytical tools have not evolved to recognize these distinctions. They apply virtually the same processes to both patentability and FTO, despite their compelling distinctions.